OPPOSITION No B 2 606 963

Corporación Habanos, S.A. (Habanos, S.A.), Carretera Vieja de Guanabacoa y Línea del Ferrocarril Final, Guanabacoa, La Habana, Cuba (opponent), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative)

a g a i n s t

Manifattura Italiana Tabacco S.P.A., Viale Marconi, 154, 60033 Chiaravalle (Ancona), Italy (applicant), represented by Gianpaolo Todisco, Via Savona 19/A, 2144 Milano, Italy (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 606 963 is upheld for all the contested goods.

2.        European Union trade mark application No 14 549 299 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 549 299. The opposition is based on, inter alia, Italian trade mark registration No 122 005. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Italian trade mark registration No 122 005.

1. The goods

The goods on which the opposition is based are the following:

Class 34: Tobacco, cigars, cigarettes, smokers’ articles, matches.

The contested goods are the following:

Class 34: Articles for use with tobacco; Matches; Tobacco and tobacco products (including substitutes); Personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; Pocket machines for rolling cigarettes; Smokers’ articles of precious metal; Smokers’ articles, not of precious metal; Mouth pieces for pipes; Cigarette holders; Cigarette holders of precious metal; Cigar holders; Pipe stems; Absorbent paper for tobacco pipes; Absorbent paper for tobacco; Cigarette paper; Pipe stoppers [smokers requisites]; Electronic cigarette cases; Pipe knives; Asian long tobacco pipe sheaths; Pipe filters; Cigarette filters; Cigar filters; Tobacco filters; Hookahs; Electronic hookahs; Pipe cleaners for tobacco pipes; Pipe tampers; Tobacco pipes; Electronic smoking pipes; Tobacco pipes of precious metal; Asian long tobacco pipes (kiseru); Mentholated pipes; Tobacco pipes, not of precious metal; Pipe stands [smokers requisites]; Cigar holders of precious metal; Tips of yellow amber for cigar and cigarette holders; Cigarette tips; Mouthpieces for cigarette holders; Books of cigarette papers; Pipe racks for tobacco pipes; Tobacco pipe scrapers; Electronic cigarette boxes; Spittoons for tobacco users; Cigar cutters; Cigarette tubes; Sulfur matches; Paraffin matches; Yellow phosphorus matches; Safety matches; Match holders; Match holders of precious metal; Match holders not of precious metal; Matchboxes; Match boxes of precious metal; Match boxes not of precious metal; Lighters for smokers; Cigarillos; Tobacco containers and humidors; Herbs for smoking; Ashtrays; Cigarettes; Menthol cigarettes; Filter-tipped cigarettes; Cigarettes containing tobacco substitutes; Cigarettes containing tobacco substitutes, not for medical purposes; Tobacco free cigarettes, other than for medical purposes; Cigarettes, cigars, cigarillos and other ready-for-use smoking articles; Cigars; Cheroots; Tobacco substitutes; Tobacco substitutes not for medical purposes; Tobacco; Loose, rolling and pipe tobacco; Smoking tobacco; Chewing tobacco; Snuff; Pipe tobacco; Menthol pipe tobacco; Roll your own tobacco; Raw tobacco; Leaf tobacco; Mentholated tobacco; Cigarette tobacco; Japanese shredded tobacco (kizami tobacco); Flavorings, other than essential oils, for use in electronic cigarettes; Smokeless cigarette vaporizer pipes; Electronic cigarettes; Liquid nicotine solutions for use in electronic cigarettes; Oral vaporizers for smokers.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Matches; tobacco and tobacco products (including substitutes); cigarillos (twice); cigarettes (twice), cigars (twice); cheroots; tobacco are identically contained in both lists of goods (including synonyms).

The contested articles for use with tobacco; personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; pocket machines for rolling cigarettes; smokers’ articles of precious metal; smokers’ articles, not of precious metal; mouth pieces for pipes; cigarette holders; cigarette holders of precious metal; cigar holders; pipe stems; absorbent paper for tobacco pipes; absorbent paper for tobacco; cigarette paper; pipe stoppers [smokers requisites]; electronic cigarette cases; pipe knives; Asian long tobacco pipe sheaths; pipe filters; cigarette filters; cigar filters; tobacco filters; hookahs; electronic hookahs; pipe cleaners for tobacco pipes; pipe tampers; tobacco pipes; electronic smoking pipes; tobacco pipes of precious metal; Asian long tobacco pipes (kiseru); mentholated pipes; tobacco pipes, not of precious metal; pipe stands [smokers requisites]; cigar holders of precious metal; tips of yellow amber for cigar and cigarette holders; cigarette tips; mouthpieces for cigarette holders; books of cigarette papers; pipe racks for tobacco pipes; tobacco pipe scrapers; electronic cigarette boxes; spittoons for tobacco users; cigar cutters; cigarette tubes; lighters for smokers; tobacco containers and humidors; ashtrays; other ready-for-use smoking articles; flavorings, other than essential oils, for use in electronic cigarettes; smokeless cigarette vaporizer pipes; electronic cigarettes; liquid nicotine solutions for use in electronic cigarettes; oral vaporizers for smokers are various accessories for smokers. They are included in the broad category of the opponent’s smokers’ articles. Therefore, they are identical.

The contested sulfur matches; paraffin matches; yellow phosphorus matches; safety matches are included in the broad category of the opponent’s matches. Therefore, they are identical.

The contested menthol cigarettes; filter-tipped cigarettes; cigarettes containing tobacco substitutes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco free cigarettes, other than for medical purposes are included in the broad category of the opponent’s cigarettes. Therefore, they are identical.

The contested herbs for smoking; tobacco substitutes; tobacco substitutes not for medical purposes; loose, rolling and pipe tobacco; smoking tobacco; chewing tobacco; snuff; pipe tobacco; menthol pipe tobacco; roll your own tobacco; raw tobacco; leaf tobacco; mentholated tobacco; cigarette tobacco; Japanese shredded tobacco (kizami tobacco) are, generally, tobacco in various forms, as well as alternatives to tobacco that can be smoked. They are included in the broad category of the opponent’s tobacco. Therefore, they are identical.

The contested match holders; match holders of precious metal; match holders not of precious metal; matchboxes; match boxes of precious metal; match boxes not of precious metal are similar to the opponent’s matches, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

Although tobacco products are relatively cheap articles for mass consumption, smokers are considered particularly careful and selective about the brand of cigarettes they smoke, so a higher degree of brand loyalty and attention is assumed when tobacco products are involved. Therefore, in the case of tobacco products a higher degree of similarity of signs may be required for confusion to occur. This has been confirmed by several Board of Appeal decisions (e.g. 26/02/2010, R 1562/2008-2, victory Slims (fig.) / VICTORIA et al., where it was stated that the consumers of Class 34 goods are generally very attentive and brand loyal; 25/04/2006, R 61/2005-2, GRANDUCATO / DUCADOS et al.).

This is not, however, the case for the other goods, for which the public’s degree of attention is normally average (some smokers’ articles, such as matches, lighters).

3. The signs

BELINDA
Earlier trade mark	Contested sign

The relevant territory is Italy.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark, ‘BELINDA’.

The contested sign is figurative and features the word ‘LINDA’ written in a standard upper case typeface. The word is in the upper part of a vertical rectangle crossed by a horizontal line, resembling the front view of a packet of cigarettes. The other figurative elements are, on the left-hand side, a curved line extending from the bottom to the top of the sign and through a small ball at the top of the rectangle, and, in the top right part of the sign, a depiction of a caravel.

Both ‘BELINDA’ in the earlier mark and ‘LINDA’ in the contested sign will be perceived as female first names, although ‘BELINDA’ will be perceived as being of foreign origin. Furthermore, ‘LINDA’ means ‘neat and tidy’ in Italian (information extracted from Reverso Dictionary online on 15/03/2017 at http://dictionary.reverso.net).

The earlier mark has no elements that could be considered either clearly more distinctive or more dominant (visually eye-catching) than other elements.

The contested sign has no elements that could be considered more distinctive and the word ‘LINDA’ is its dominant element, as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). As a result, the verbal element ‘LINDA’ in the contested sign will have a stronger impact on the consumer than the sign’s figurative elements.

Visually, the signs coincide in the string of letters ‘LINDA’. However, they differ in the additional letters ‘BE’ at the start of the earlier mark and in the figurative elements of the contested sign, which have no counterparts in the other mark.

Taking into account the limited impact of the contested sign’s figurative elements, and bearing in mind that ‘LINDA’ is its dominant element, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘LINDA’, present identically in both signs. The pronunciation differs in the sound of the additional letters ‘BE’ at the start of the earlier mark, which have no counterparts in the contested sign. The earlier mark is longer than the contested sign due to the additional syllable in the word ‘BELINDA’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the public in the relevant territory will perceive the figurative elements of the packet of cigarettes, the curved line, the small ball and the caravel in the contested sign as such.

Both ‘BELINDA’ and ‘LINDA’ will be perceived as female first names. Moreover, it cannot be excluded that ‘LINDA’ will be perceived as a diminutive of ‘BELINDA’. To this extent, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical or similar to the opponent’s goods and they target the public at large, whose degree of attention is average to high.

The signs under comparison are visually, aurally and conceptually similar to an average degree. The relevant public will perceive the verbal elements in the signs as female first names.

As a rule, when one of the conflicting trade marks or a part thereof is reproduced in the other mark, the signs will be found similar, and this, together with other factors, may lead to a likelihood of confusion.

In the present case, the coinciding word ‘LINDA’ is the dominant element of the contested sign and is reproduced in the earlier mark.

The differences between the signs are linked to elements with a reduced visual impact and/or that the public will not perceive as providing relevant information on the commercial origin of the goods. In the Opposition Division’s view, those differences are not sufficient to dispel the likelihood that the relevant public may perceive the marks as variants of each other used by the same company or economically linked companies.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Considering that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, they may legitimately believe that the contested trade mark is a new version or a brand variation of the earlier mark. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, even considering that the degree of attention with regard to some of the relevant goods may be higher than average.

The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant further argues that the opponent has acquiesced in the coexistence of the earlier mark with the applicant’s own. However, the acquiescence argument is not relevant, since it does not concern the trade mark application at issue. Acquiescence is a means of defence only against an invalidity application (see Article 54 EUTMR) and is not relevant to opposition proceedings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 122 005. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right Italian trade mark registration No 122 005 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Elisa ZAERA CUADRADO

Loreto URRACA LUQUE

Jessica LEWIS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.